Burlington Merchandising Corporation

Trademark Trial and Appeal Board

Sep 1, 2016

No. 86433525 (T.T.A.B. Sep. 1, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: September 1, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Burlington Merchandising Corporation
_____

Serial No. 86433525
_____

Karl S. Sawyer, Jr. of Nelson Mullins Riley & Scarborough LLP
for Burlington Merchandising Corporation.
Lyndsey Kuykendall, Trademark Examining Attorney, Law Office 102,
Mitchell Front, Managing Attorney.
_____

Before Seeherman, Adlin and Hightower,
Administrative Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:
Burlington Merchandising Corporation (“Applicant”) has appealed from the
Trademark Examining Attorney’s final refusal to register the mark BLUSH FOR
HER, in standard characters, with FOR HER disclaimed, for costume jewelry in Class
14.1 Registration was refused pursuant to Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles the standard

1 Application Serial No. 86433525, filed October 24, 2014, and based on Section 1(b) of the
Trademark Act (intent-to-use).
Serial No. 86433525
- 2 -
character mark BLUSH COLLECTION, with COLLECTION disclaimed, registered
on the Supplemental Register for “gemstone jewelry; jewelry; precious and semi-
precious gems”2 that, if used for Applicant’s identified goods, it is likely to cause
confusion or mistake or to deceive. Registration had also been refused based on
Registration No. 4081295 for BLUSH BY DESIGN for “diamonds and jewelry
comprised in whole or in part of diamonds,” registered by another entity, but in her
brief the Examining Attorney withdrew the refusal with respect to this registration.
Because the refusal on this basis was still in effect at the time Applicant filed its
appeal brief, many of its arguments relate to the coexistence of these two
registrations.
We affirm the refusal to register.
Our determination of the issue of likelihood of confusion under Section 2(d) of the
Trademark Act is based on an analysis of all of the probative facts in evidence that
are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., Inc.,
315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
We begin our analysis with a consideration of the strength of the cited mark. The
cited registration issued on the Supplemental Register, indicating that the mark is
not inherently distinctive, since marks registrable on the Principal Register are not
registrable on the Supplemental Register. See Section 23 of the Trademark Act, 15
U.S.C. § 1091; TMEP § 815.01 (April 2016) (“A mark that is clearly eligible for the

2 Registration No. 4482787, issued February 11, 2014.
Serial No. 86433525
- 3 -
Principal Register may not be registered on the Supplemental Register.”). Moreover,
the word COLLECTION in the mark has been disclaimed, showing that this word
was determined to be an unregistrable component of the mark. See TBMP
§ 1213.03(b). Accordingly, COLLECTION has no source-indicating significance.
Registered marks, whether those registrations are on the Principal or the
Supplemental Register, may form a basis for refusing registration under Section 2(d).
However, in most cases the strength to be accorded to a mark on the Supplemental
Register will be less than that accorded to a mark that is registered on the Principal
Register. See In re Smith and Mehaffey, 31 USPQ2d 1531, 1533 (TTAB 1994). It has
long been recognized that the strength or distinctiveness of a mark falls along a
spectrum, and that the scope of protection accorded to an invented or arbitrary term
is greater than the scope of protection accorded to a highly suggestive or descriptive
mark. See In re The Clorox Co., 578 F.2d 305, 198 USPQ 337, 341 (CCPA 1978) (“the
level of descriptiveness of a cited mark may influence the conclusion that confusion
is likely or unlikely”). It is not entirely clear to us why the cited registration issued
on the Supplemental Register, and the now-withdrawn citation for BLUSH BY
DESIGN issued on the Principal Register without resort to the provisions of Section
2(f). Nonetheless, we will assume that the cited mark has some degree of
descriptiveness, and accord it a more limited scope of protection than an inherently
distinctive mark.
With this in mind, we turn to the other du Pont factors. Applicant’s goods are
identified as costume jewelry; the goods in the cited registration are “gemstone
Serial No. 86433525
- 4 -
jewelry; jewelry; precious and semi-precious gems.” The “jewelry” identified in the
registration is not limited as to type, and therefore it must be deemed to encompass
both costume jewelry and jewelry made of precious and semi-precious gems. In that
respect, Registrant’s identified “jewelry” and Applicant’s identified “costume jewelry”
are legally the same. Moreover, because the goods are legally the same, they are
presumed to travel in the same channels of trade to the same class of purchasers. In
re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012).
This legal identity in the goods and trade channels strongly favors a finding of
likelihood of confusion, because when marks would appear on virtually identical
goods or services, the degree of similarity necessary to support a conclusion of likely
confusion declines. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d
874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
We turn next to a consideration of the marks. Applicant’s mark is BLUSH FOR
HER and the cited mark is BLUSH COLLECTION. As previously stated, the
disclaimed word COLLECTION has no source-indicating significance. Nor do the
words FOR HER in Applicant’s mark have meaningful source-indicating value; as the
Examining Attorney stated in requiring a disclaimer of these words, they merely
describe the customer or user of Applicant’s goods. As a result, although Applicant’s
and Registrant’s marks contain words in addition to the common word BLUSH, they
do not serve to distinguish the marks. The similarities in the marks far outweigh the
differences, and overall the marks convey similar commercial impressions.
Serial No. 86433525
- 5 -
With respect to the conditions of purchase du Pont factor, Applicant has conceded
that its goods are “relatively inexpensive costume jewelry.” Brief, 4 TTABVUE 10.
Registrant’s goods, as we have already discussed, must also be deemed to include
inexpensive costume jewelry. Such goods are likely to be purchased without a great
deal of care, and the purchasers would include members of the general public, who
do not have any particular sophistication. As a result, this factor also favors a finding
of likelihood of confusion.
Applicant’s principal argument is that the cited registration and the registration
for BLUSH BY DESIGN for diamonds and diamond jewelry, previously cited as a bar
to Applicant’s application and later withdrawn, coexist on the Registers, and that if
they can coexist, Applicant’s mark for its goods should also be able to coexist with
them. The issue of why a particular examining attorney approved the registration of
BLUSH COLLECTION on the Supplemental Register despite the existence of
BLUSH BY DESIGN on the Principal Register is not before us. We must determine
whether the present mark BLUSH FOR HER for costume jewelry is likely to cause
confusion with BLUSH COLLECTION for, inter alia, costume jewelry. We are
certainly not bound by a decision of an examining attorney who was considering
different marks for different goods. See In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564 (Fed. Cir. 2001).
Accordingly, even though we accord the cited Supplemental Register registration
a more limited scope of protection, that scope of protection extends to prevent the
registration of BLUSH FOR HER for identical goods. After considering all of the
Serial No. 86433525
- 6 -
evidence and arguments, we find that Applicant’s mark BLUSH FOR HER for
costume jewelry is likely to cause confusion with the mark and goods in the cited
registration.
Decision: The refusal to register Applicant’s mark BLUSH FOR HER is affirmed.